Yet, for the fourth time in 150 years, the Supreme Court fails to clearly distinguish between an invention and an idea

Put yourself in the year 1850. You’ve just discovered electro­magnetism—the idea that current in a wire produces a magnetic field. In quick ­succession you invent an electromagnet (a coiled wire wrapped around a nail and connected to a battery), a telegraph system employing the electromagnet, and finally, a rudimentary electric motor, including permanent magnets on a rotor and electromagnets fashioned as a stator.

For which of these are you entitled to a patent? Few would seriously dispute the eligibility of the motor and the telegraph. But what about the electromagnet? Wouldn’t it be nearly the same as patenting electromagnetism itself?

This problem has confounded the courts since, well, the days of Samuel Morse. He tried to patent the use of electromagnetism to make or print characters, signs, or letters at a distance. No, said the U.S. Supreme Court in 1853—that’s trying to patent an idea instead of an application of an idea.

Ever since, the issue of what exactly is patentable has remained unresolved.

Jump ahead a hundred years to the first patent filings for software. With two early decisions, the Supreme Court confused inventors further by seeming to contradict itself. In Diamond v. Diehr (1981) it held that a computerized method that employed an equation used in curing rubber was patentable. But in Parker v. Flook (1978), a computer-implemented method employing a formula to update alarm limits in a catalytic conversion process was not patentable. The two cases are, to say the least, difficult to reconcile, and once again the line that separates unpatentable abstract ideas, laws of nature, formulas, and equations from patentable applications of laws of nature and implementations of an idea remained undrawn.

Let’s jump ahead once more, to the patenting of business methods. In 2008, an appellate court devised a new test to decide where the line was to be drawn. But two years later the Supreme Court held that this test was not definitive: In Bilski v. Kappos (2010), the high court held that patent claims that failed the test might still constitute a patentable invention. And yet, the court raised the patent eligibility bar, at least for some business methods, by striking the Bilski patent application.

Enter now patents for medical diagnostic procedures and genetics. Last month, the Supreme Court reviewed a patent [PDF] covering a method that correlates metabolic concentrations in a patient’s blood with predetermined thresholds, helping a physician determine whether to increase or decrease the drug dosage that led to the metabolites forming in the blood in the first place. Not patentable, held the court:

To put the matter more succinctly, the [patent] claims inform a relevant ­audience about certain laws of nature [metabolites produced because of the drug]; any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.

In other words, a process that, as the court put it, “amounts to no more than an instruction ‘to apply the natural law,’ ” is no more patentable than natural laws themselves. Like Bilski, this case could narrow the realm of the patentable—indeed, it could lead to patents for genetic material being held invalid.

The upshot is that, even after 150 years and four huge waves of innovation, it’s still hard to differentiate between an idea or a law of nature and an application of the same. And it’s a problem that spans all fields—electromagnetism, software, business methods, medicine, and more.

In fact, the problem is utterly pervasive. Everything is built on or operates according to at least one natural law, and everything stems from some kind of an idea: That current in a wire produces a magnetic field is a law underlying the idea behind many products.

Vagueness and ambiguity are a patent attorney’s stock in trade, but I feel for inventors, who need some kind of clarity when it comes to drawing the line between what is and isn’t patentable.

About the Author

Kirk Teska is a partner of Iandiorio Teska & Coleman, an intellectual property law firm in Waltham, Mass.